JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
24 January 2019 (*)
(EU trade mark — Invalidity proceedings — International registration designating the European Union — Figurative mark BIG SAM SPORTSWEAR COMPANY — Earlier word mark SAM — Relative ground for refusal — Extinction of rights due to acquiescence — Evidence presented for the first time before the General Court — Article 54(2) of Regulation (EC) No 207/2009 (now Article 61(2) of Regulation (EU) 2017/1001) — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))
In Case T‑785/17,
Ercan Ilhan, residing in Istanbul (Turkey), represented by S. Can, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being
Time Gate GmbH, established in Cologne (Germany), represented by R. Kunz‑Hallstein, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 September 2017 (Case R 974/2016-5), relating to invalidity proceedings between Time Gate and Mr Ilhan,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 November 2017,
having regard to the response of EUIPO lodged at the Court Registry on 21 March 2018,
having regard to the response of the intervener lodged at the Court Registry on 14 March 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 24 August 2006, the applicant, Mr Ercan Ilhan, filed an application for an international registration designating the European Union with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in, inter alia, Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Knitwear (clothing), jeans clothing, clothing of leather, clothing of imitations of leather; track suits; shirts, jackets (clothing), denim jackets, trousers, skirts, blouses, bathing suits, beach clothes; underwear, gloves (clothing); socks; shoes, boots, slippers, babies’ shoes, sports shoes, iron fittings for shoes, soles for footwear, heelpieces, for boots and shoes, stockings, shoe uppers; headgear for wear, hats, berets, caps; babies’ diapers of textile, babies’ jackets, bibs (not of paper); neckties, bowties, shawls, scarfs, collars (clothing), muffs, bandanas (neckerchiefs), wristbands (clothing); belts, braces for clothing (suspenders), garters.’
4 The figurative mark BIG SAM SPORTSWEAR COMPANY was registered as an international registration designating the European Union on 23 March 2009 under number 0891276 for the goods referred to in paragraph 3 above. It is apparent from the documents before the Court that the applicant stated that he renounced any exclusive rights over the element ‘sportswear company’.
5 On 4 December 2014, the intervener, Time Gate GmbH, filed an application for a declaration that the figurative mark BIG SAM SPORTSWEAR COMPANY was invalid pursuant to Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001), in respect of all the abovementioned goods.
6 The application for a declaration of invalidity was based on the international registration designating the European Union of the earlier word mark SAM, registered on 24 October 1991 under number 578576 for the following goods in Class 25: ‘Clothing, footwear, headgear’;
7 By decision of 30 March 2016, the Cancellation Division of EUIPO upheld the application for a declaration of invalidity in its entirety.
8 On 30 May 2016, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.
9 By decision of 13 September 2017 (‘the contested decision’), the Board of Appeal dismissed the appeal.
10 First, the Board of Appeal found that the claim of acquiescence under Article 54(1) of Regulation No 207/2009 (now Article 61(1) of Regulation 2017/1001) was inadmissible since it had been raised for the first time before that board, whereas it should have been put forward at the very beginning of the invalidity proceedings, before the Cancellation Division (paragraph 22 of the contested decision).
11 Thus, according to the Board of Appeal, the evidence adduced in support of the acquiescence claim could not be accepted since it was new, not merely supplementary, and there was no reason which could justify the fact that it had been adduced for the first time before the Board of Appeal (paragraph 28 of the contested decision).
12 In any event, the Board of Appeal stated that, even if the claim of acquiescence had been admissible and it had been possible to examine the new evidence, that documentation would not have been capable of establishing that the intervener was aware of the use of the contested mark in the relevant territory (paragraph 29 of the contested decision).
13 Secondly, the Board of Appeal considered that the Cancellation Division had been fully entitled to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in relation to all the goods in question and, in particular as regards the Polish, Czech, Romanian and Slovenian public of the European Union and that, consequently, it was not necessary to assess the likelihood of confusion between the contested mark and the intervener’s remaining earlier marks (paragraphs 87 and 88 of the contested decision).
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– allow the registration of the contested mark;
– order EUIPO and the intervener to bear their own costs.
15 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO.
16 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
17 The applicant relies, in essence, on two pleas in law alleging, first, infringement of Article 54(1) of Regulation No 207/2009 and, secondly, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
The first plea, alleging infringement of Article 54(1) of Regulation No 207/2009
18 Under Article 158 of Regulation No 207/2009 (now Article 198 of Regulation 2017/1001), an application for invalidation of the effects of an international registration designating the European Union is to take the place of an application for a declaration of invalidity under Article 53 of that regulation.
19 Pursuant to Article 54(1) of Regulation No 207/2009, where the proprietor of an EU trade mark has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the European Union while being aware of such use, he will no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.
20 In accordance with the case-law, four conditions must be satisfied to cause the start of the limitation period in consequence of acquiescence where there is use of a later trade mark that is identical to the earlier trade mark or so similar as to cause confusion: (i) the later trade mark must be registered; (ii) the application must have been made in good faith by its proprietor; (iii) it must be used in the Member State where the earlier trade mark is protected; and, lastly, (iv) the proprietor of the earlier trade mark must be aware of the use of that trade mark after its registration (judgment of 28 June 2012, I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, EU:T:2012:327, paragraph 31; see also, by analogy, judgment of 22 September 2011, Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraphs 54 and 56 to 58).
21 In addition, it must be noted that it is from the time when the proprietor of the earlier trade mark becomes aware of the use of the later European Union trade mark that it has the option of not acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of the later trade mark (judgment of 28 June 2012, B. Antonio Basile 1952), T‑133/09, EU:T:2012:327, paragraph 33; see also, by analogy, judgment of 22 September 2011, Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraphs 19 and 44 to 50).
22 By its first plea, the applicant, in essence, takes issue with the Board of Appeal’s assessment that the evidence adduced before that board by the applicant failed to establish acquiescence.
23 Furthermore, the applicant adduces new evidence in its application, as set out in Annexes A.6 and A.8 and paragraphs 13 and 14 of the application, which it claims demonstrates that the intervener was aware of the use of the contested mark and did not act quickly enough to stop that use.
24 EUIPO and the intervener dispute the applicant’s arguments.
Admissibility of the evidence adduced for the first time before the General Court
25 EUIPO and the intervener contend that the evidence adduced for the first time before the Court and which was not available to the Board of Appeal when the contested decision was adopted must be rejected as inadmissible (the evidence in Annexes A.6 and A.8 and paragraphs 13 and 14 of the application).
26 According to the case-law, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so that it is not the Court’s function to review the facts in the light of documents produced for the first time before it. The documents referred to above must therefore be rejected, without it being necessary to examine their probative value (see, to that effect, order of 7 February 2013, Majtczak v Feng Shen Technology and OHIM, C‑266/12 P, not published, EU:C:2013:73, paragraph 45, and judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
27 It follows from the foregoing that the evidence adduced for the first time before the Court and included in Annexes A.6 and A.8 and paragraphs 13 and 14 of the application must be rejected as inadmissible.
28 The review of the legality of the contested decision will therefore be carried out in the light solely of the evidence which was produced during the administrative proceedings as it appears in EUIPO’s case file (see, to that effect, judgment of 15 July 2014, Łaszkiewicz v EUIPO — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 25).
Substance
29 Pursuant to settled case-law, a plea levelled at reasons which are included in a decision for the sake of completeness cannot result in the annulment of that decision and are therefore ineffective (see judgment of 3 July 2013, Cytochroma Development v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑106/12, not published, EU:T:2013:340, paragraph 57 and the case-law cited).
30 In that respect, it must be noted that the first plea concerns only the reasons that the Board of Appeal included for the sake of completeness with regard to the inconclusive nature of the evidence adduced in seeking to establish acquiescence (paragraphs 29 to 36 of the contested decision).
31 In accordance with the case-law cited in paragraph 29 above, the first plea must be rejected as being ineffective.
32 In any event, it must be held that the Board of Appeal did not make an error of assessment in finding that the evidence adduced before it and seeking to establish acquiescence was inconclusive.
33 The Board of Appeal rightly considered that the relevant date to take into consideration for calculating the five-year period required by Article 54 of Regulation No 207/2009 was 4 December 2014, the date of filing of the application for a declaration of invalidity. In the light of the case-law cited in paragraphs 20 and 21 above, it was therefore for the applicant to prove that the intervener had become aware of the use of the contested mark by 4 December 2009 at the latest. However, as the Board of Appeal correctly held, the applicant did not succeed in that regard.
34 Thus, in the first place, the Board of Appeal was correct in finding that none of the documents adduced before it by the applicant enabled identification of the exact date on which the applicant had started marketing goods bearing the contested mark on an online shop held by Uncle Sam GmbH, a company belonging to Mr G., the current owner of the intervener. In particular, the applicant’s assertion that the sale of its products began around 5 September 2009 is not supported by any evidence.
35 In the second place, the Board of Appeal was right in holding that the fact that Uncle Sam had filed, in 2006, an opposition before EUIPO against registration of the contested mark also failed to establish that the intervener had been aware of the use of the contested mark since the intervener and Uncle Sam are two separate companies. Even if the applicant had succeeded in establishing those points, it still would have needed to prove that the intervener had been aware of its use of the contested mark. As rightly noted by the Board of Appeal, an undertaking may decide to oppose the registration of a mark as a commercial strategy without knowing whether the mark is in fact being or will be used.
36 It follows from the foregoing that the first plea, alleging infringement of Article 54(1) of Regulation No 207/2009, must be rejected as being ineffective and, for the sake of completeness, as being unfounded.
The second plea, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
37 By its second plea, the applicant, in essence, challenges a number of the Board of Appeal’s assessments relating to the analysis of the likelihood of confusion.
38 EUIPO and the intervener dispute the applicant’s arguments.
39 Under Article 53(1)(a) of Regulation No 207/2009 and Article 8(1)(b) of that regulation, on application by the proprietor of an earlier mark, a trade mark is to be declared invalid if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
40 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. Pursuant to that case‑law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
41 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
42 In view of the applicant’s challenges to the assessments of the Board of Appeal in relation to the relevant public and the comparison of the signs at issue, it is necessary to examine whether the Board of Appeal erred in finding that there was a likelihood of confusion.
The relevant public and its level of attention
43 It should be noted that according to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
44 In the present case, the Board of Appeal found, first of all, in paragraph 39 of the contested decision, that the relevant public consisted of the general public. Furthermore, the Board of Appeal stated, in paragraph 41 of the contested decision, that the earlier right considered was an international registration designating the European Union and that the relevant territory was the European Union.
45 The applicant claims that the relevant public has a heightened level of attention, whereas, the Board of Appeal, in paragraph 44 of the contested decision, considered the level of attention of the relevant public to be ‘average’.
46 The intervener disputes the applicant’s arguments.
47 As regards, in the first place, the relevant public, it must be held that the Board of Appeal did not make an error of assessment in finding that the relevant public was the general public of the European Union, a finding which, moreover, has not been disputed by the parties.
48 As regards, in the second place, the level of attention of the relevant public, it is clear from the case-law that the level of attention of consumers when purchasing goods in Class 25 is no more than average (see judgment of 19 April 2013, Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, not published, EU:T:2013:207, paragraph 23 and the case-law cited).
49 It must therefore be held that the level of attention of the relevant public is no more than average and, accordingly, the applicant’s argument must be rejected as unfounded.
The comparison of the goods
50 It must be held that the Board of Appeal did not make an error of assessment in finding that the goods at issue were identical, a finding which, moreover, has not been disputed by the parties.
The comparison of the signs
51 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
– The degree of phonetic similarity
52 The Board of Appeal found, in paragraph 64 of the contested decision, that, phonetically, the signs were similar to a low degree.
53 The applicant submits that, even though the pronunciation of the signs is identical with regard to the word element ‘sam’, the relevant public will pronounce the contested mark as ‘big sam. Thus the applicant considers that the signs at issue are phonetically similar to a very low degree.
54 EUIPO and the intervener dispute the applicant’s arguments.
55 In the first place, it should be noted that, as the applicant claims, the relevant public will pronounce the contested mark as ‘big sam’.
56 The word elements ‘sportswear’ and ‘company’ featured in the contested mark are unlikely to be pronounced by the relevant public since they occupy a secondary position in relation to the other word elements, ‘big’ and ‘sam’, and are purely descriptive of some of the goods at issue, namely the sportswear.
57 As the applicant claims, the word elements that must be compared are therefore ‘sam’, as regards the earlier mark, and ‘big sam’, as regards the contested mark. Taking account of the fact that the applicant renounced any exclusive rights over the element ‘sportswear company’ (see paragraph 4 above) serves to further confirm that conclusion.
58 In the second place, it must be noted that the marks at issue are similar in so far as they both contain the word ‘sam’ but differ in that the contested mark contains the additional word element ‘big’.
59 Accordingly, it must be held that the degree of phonetic similarity is low and, therefore, that the Board of Appeal did not make an error of assessment in that regard.
– The degree of visual similarity
60 The Board of Appeal found, in paragraph 61 of the contested decision, that there was a low degree of visual similarity between the marks at issue.
61 The applicant states that the contested mark is composed of an English bulldog holding a dumbbell in his mouth together with the word elements ‘sportswear’, ‘company’, ‘big’ and ‘sam’, on a yellow background, whereas the earlier mark consists only of the word element ‘sam’. According to the applicant, the relevant public will therefore see a clear distinction between the signs at issue.
62 EUIPO and the intervener dispute the applicant’s arguments.
63 As regards the visual comparison, it must be pointed out, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
64 In that regard, it should be noted that, as the Board of Appeal found in the contested decision, the degree of visual similarity between the marks at issue is low given that the representation of the bulldog occupies a conspicuous part of the contested mark and that, even though the word element ‘sam’ will not be disregarded by the relevant public, that word element will not be perceived alone, but in conjunction with the other word element ‘big’, which is not present in the earlier mark.
65 It must therefore be held that the degree of visual similarity between the marks at issue is low.
– The degree of conceptual similarity
66 The Board of Appeal found, in paragraph 68 of the contested decision, that the degree of conceptual similarity was average.
67 However, according to the applicant, there is no conceptual similarity between the contested mark and the earlier mark since consumers will associate the contested mark with ‘Sam the dog’, whereas they will attach no specific reference to the earlier mark. The applicant thus takes the view that the relevant public will retain the image of the dog in relation to the contested trade mark but not in relation to the earlier mark, meaning that, conceptually, there is no likelihood of confusion.
68 EUIPO and the intervener dispute the applicant’s arguments.
69 As is apparent from paragraph 57 above, the relevant public will refer to the earlier mark as ‘sam’ and refer to the contested mark as ‘big sam’.
70 In the first place, contrary to the claims of the applicant, the marks at issue will be perceived by the relevant public as referring to the same first name, Sam. It is a matter of common knowledge that Sam is a first name and will be perceived as such by a significant part of the relevant public. Moreover, the addition of the adjective ‘big’ in the contested mark, the meaning of which will be understood by a significant part of the relevant public, will not prevent a part of the relevant public from perceiving ‘big sam’ as referring also to a cartoon named Sam.
71 That finding is not called into question by the fact that, for the relevant public that speaks Czech, Polish, Slovenian, and Bulgarian, the word ‘sam’ means ‘alone’ and that a part of that public might understand the term ‘sam’ in that sense rather than associating it with the first name Sam. Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T–82/03 and T 103/03, EU:T:2006:397, paragraph 76 and the case-law cited). Although it is possible that part of the relevant public of the European Union might understand ‘sam’ to mean ‘alone’, the fact remains that another part of the relevant public of the European Union, in particular the relevant public that does not speak Czech, Polish, Slovenian or Bulgarian, will understand the word ‘sam’ to be a first name and there is therefore a conceptual similarity between the marks at issue for that part of the public.
72 In the second place, while it is true, as the applicant submits, that the relevant public might retain the image of the dog in relation to the contested mark, account should be taken of the fact that consumers do not normally analyse a mark in detail, do not usually make a direct comparison between marks and often, in normal purchasing circumstances, have to rely on the imperfect recollection that they have kept in mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
73 Thus, it must be held that the Board of Appeal did not make an error of assessment in finding that the degree of conceptual similarity between the marks at issue was average.
74 It follows from the foregoing that, even though the degree of phonetic and visual similarity between the marks at issue is low, the degree of conceptual similarity between them is average.
The likelihood of confusion
75 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
76 The Board of Appeal found, in paragraphs 70 to 87 of the contested decision, that there was a likelihood of confusion.
77 However, the applicant claims that there is no likelihood of confusion given that the word ‘sam’ has no meaning for the relevant public and that there is no visual, phonetic and conceptual similarity between the marks at issue.
78 EUIPO and the intervener dispute the applicant’s arguments.
79 It should be noted that, as is apparent from paragraph 49 above, the level of attention of the relevant public is no more than average, that, as is apparent from paragraph 50 above, the goods covered by the marks at issue are identical and that, as is apparent from paragraph 74 above, even though the degree of phonetic and visual similarity between the marks at issue is low, the degree of conceptual similarity between them is average.
80 In that regard, it should be pointed out that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (see judgment of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 51 and the case-law cited).
81 In the present case, there is a risk that part of the relevant public might not clearly understand that the marks at issue belong to two different and competing undertakings. Part of the relevant public is likely to wrongly identify the contested mark as a sub-brand of the earlier mark and wrongly conclude that the two marks at issue are marketed by the same undertaking.
82 Thus, the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 and that finding cannot be called into question by the renunciation of rights referred to in paragraph 4 above.
83 Lastly, as regards the applicant’s argument that the Board of Appeal did not state the reasons as to why it deviated from the decision of the Landgericht Frankfurt (Regional Court, Frankfurt, Germany) regarding the likelihood of confusion between the marks SAM and BIG SAM, it should be recalled that, according to the case-law, even though it is desirable for EUIPO to take into account decisions of national authorities concerning marks identical to those on which it has to give a decision, EUIPO is nevertheless not required to take those decisions into account, including decisions concerning identical marks, and, if it does take them into account, is not bound by those decisions (judgment of 15 July 2015, Australian Gold v OHIM — Effect Management & Holding (HOT), T‑611/13, EU:T:2015:492, paragraph 65).
84 It follows from the case-law cited in paragraph 83 above that the Board of Appeal was not required to refer to the decision of the Landgericht Frankfurt (Regional Court, Frankfurt) when assessing the likelihood of confusion.
85 In the light of all of the foregoing, the second plea must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to give a ruling on the admissibility of the applicant’s second head of claim.
Costs
86 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Ercan Ilhan to pay the costs.
Gervasoni | Kowalik-Bańczyk | Mac Eochaidh |
Delivered in open court in Luxembourg on 24 January 2019.